OPPOSITION No B 3 067 415

Maria Ruiz Martin, Jose Anton Agullo 9, 03203 Elche, Spain (opponent), represented by Alberto Paz Espuche, Muelle de Poniente s/n (Antigua Casa del Mar), 03001 Alicante, Spain (professional representative)

a g a i n s t

Camac Arti Grafiche S.r.l., Via Fossalta 3377, 47522 Pievesestina Cesena (FC), Italy (applicant), represented by Enrico La Malfa, Via Santo Stefano 58, 40125 Bologna, Italy (professional representative).

On 26/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 415 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 932 405 for the figurative mark , namely all the goods in Classes 18 and 25. The opposition is based on European trade mark registration No 17 619 552 for the figurative mark and Spanish trade mark registration No 3 655 098 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods

The goods on which the opposition is based (covered by both earlier marks equally) are the following:

Class 25: Clothing; Headgear; Footwear.

The contested goods are the following:

Class 18: Bags; Bags for sports; Travel baggage; Shoe bags; Garment carriers; Handbags; Purses; Small bags for men; Trunks [luggage]; Suitcases; Rucksacks; Umbrellas; Key cases; Pocket wallets; Attaché cases; Leather and imitations of leather; Leather purses.

Class 25: Clothing; Sportswear; Work clothes; Beach clothes; Bathing suits; Dressing gowns; Shoes; Slippers; Headgear; Underwear; Shawls and headscarves; Nightwear.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 18

Some of the contested goods in Class 18, namely bags; bags for sports; handbags; purses; small bags for men; rucksacks; pocket wallets; attaché cases; leather purses, are related to articles of clothing, headgear and footwear in Class 25. This is because these articles may be closely coordinated with each other. In addition they usually coincide in producer, relevant public and distribution channels. Therefore, these goods are considered to be similar.

However, the contested shoe bags; garment carriers; travel baggage; trunks [luggage]; suitcases; umbrellas; key cases have an essentially utilitarian function and not an essentially aesthetic function. There is therefore no reason for the consumer to coordinate them with the ‘clothing, footwear, headgear’ in Class 25. The mere fact that shoe bags; garment carriers; travel baggage; trunks [luggage]; suitcases are used to carry clothing, headgear or footwear does not establish a relevant similarity between them, as it remains that these contested goods have in the first place a practical function, namely that of carrying, and protecting, a traveler’s belongings, and are not perceived as part of the external image, have no aesthetic function. Also umbrellas and key cases have essentially practical functions, namely to protect from rain and to carry the keys. Hence, all the aforesaid contested goods and the opponent’s goods in Class 25 differ in nature, purpose, method of use and are not in competition with or complementary to each other. Consequently, they are dissimilar.

The contested leather and imitations of leather refer to the skins of various kinds of animals (or imitations thereof). These are raw materials. The fact that one product is used for manufacturing another (for example, leather for footwear) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from clothing, headgear and footwear. Therefore, these goods are dissimilar.

Contested goods in Class 25

All of the contested goods in this class are identical to the opponent’s goods, either because they are identically contained in both lists or because the applicant’s goods are included in the opponent’s clothing; headgear and footwear.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large. The degree of attention is considered to be average.

c) The signs

Earlier Mark 1 Earlier Mark 2
Earlier trade marks	Contested sign

The relevant territory is the European Union for the earlier mark 1 and Spain for the earlier mark 2.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

All signs at issue are figurative. The earlier mark 1 consists of a slightly stylized bold white capital letter B, placed underneath a verbal element ‘BRADLEYS’, written in standard upper-case typeface. All those elements are placed within a dark blue square. The letter ‘B’, includes two way lines, which may be perceived as a decorative feature. However, it cannot be excluded that a part of the public will perceive those lines as a letter ‘S’ embedded in the letter ‘B’.

The earlier mark 2 consists of a slightly stylized bold black capital letter ‘B’ of the same description as in the earlier mark 1. The stylized letter ‘B’ in this mark is followed by a dog’s head silhouette in white placed within a black circle, which by a part of the public may be perceived as the stylized letter ‘O’. Underneath those characters is the verbal element ‘Bradley’s’ followed by a space and a verbal element ‘co’, both elements written in handwriting style.

The contested sign includes a capital letter ‘B’ placed above a short line, followed by the capital letter ‘S’ placed under a short line. All characters in this sign are black and are depicted in standard bold typeface.

For the purposes of this comparison and bearing in mind that part of the public will see the letter ‘S’ in the earlier marks, which may result in some similarity with the contested sign (as it will be analysed further below), the Opposition Division will assess the signs from this perspective as this is the most advantageous scenario for the opponent, namely that the letter combination ‘BS’ will be perceived in both earlier marks.

The elements ‘BRADLEYS’ and ‘Bradley’s’ of the earlier marks will be perceived by a part of the public as a reference to an English family name or a first name, the latter in the possessive form. However, for another part of the public, e.g. a part of the Spanish-speaking public these elements will have no meaning, hence fanciful. In both cases, these elements are considered distinctive. The same applies as regards the letters ‘BS’ included in both earlier marks as well as in the contested sign, respectively, if perceived so, as regards, the letter combination ‘BSO’ in the earlier mark 2. All those elements are distinctive, as they have no meaning in relation to the relevant goods.

The verbal element ‘co’ of the earlier mark 2, lacks any trade mark significance since it will be recognized as an abbreviation for ‘company’ as it is frequently used at the end of business names. Due to its use e.g. by multinational companies, also the consumers in Spain will understand its meaning and therefore would merely perceive it as an obvious indication of an undertaking. Therefore, this element is considered to be non-distinctive.

The silhouette of a dog of the same mark is distinctive as it does not relate to any of the characteristics of the goods at issue. As regards the remaining elements of the marks at issue, those are of a decorative character.

None of the signs at issue has an element that can be considered more dominant (visually outstanding) than other elements. Due to their position and stylisation the Opposition Division finds that despite their slightly smaller size the verbal elements BRADLEYS’ and ‘Bradley’s co’ are equally eye catching as the remaining elements in the two earlier marks.

While it is true that, as the opponent correctly states, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37), however, in certain cases, the figurative element of a composite mark may, owing to, inter alia, its shape, size, colour or position within the sign, rank equally with the word element (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 37). The Opposition Division considers that this is the case in the present proceedings, where the silhouette of a dog’s head set against a black circular background, maintains an independent, distinctive role in the earlier mark 2 and forms, together with the verbal elements, its co-dominant elements.

Visually, even though the letters ‘BS’ could be recognised in the earlier marks and are also present in the contested sign (and the signs coincide in those), the graphic stylization of the earlier marks is very different compared with the contested sign. Furthermore, the signs differ in all the remaining elements.

Therefore, the signs are visually similar to at most a very low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory as regards the earlier mark 1 the pronunciation of that mark and the contested sign coincides in the in the sound of the letters ‛BS’, present identically in both signs. However, it differs in the sound of the element ‘BRADLEYS’ of the earlier mark 1, which has no counterpart in the contested mark.

As regards the earlier mark 2 and the contested mark, the coincidences are the same, while the differences are in the additional letter ‘O’ of the earlier mark, at least for a part of the Spanish-speaking public, and in the additional verbal elements ‘Bradley’s co’. However, it is unlikely that the part ‘co’ will be pronounced and in any case due to its non-distinctive character the impact of this element is very minimal if any in the comparison of the signs. In addition, the figurative elements are not subject to a phonetic assessment.

Nevertheless the foregoing, taking into account the additional distinctive verbal elements ‘BRADLEYS’ and ‘Bradley’s’ in the two earlier marks, the earlier mark 1 and the contested sign are similar to a low degree whereas the earlier mark 2 and the contested sign to a very low degree, if the letter ‘O’ will be recognized in the said earlier mark.

Conceptually, although the public in the relevant territory will perceive the meanings of some of the elements of the earlier marks as explained above, the other sign has no meaning in the relevant territories. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the two earlier marks must be seen as normal, despite the presence of the non‑distinctive element ‘.co’ in the earlier mark 2, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The contested goods were found to be partly identical, partly similar and partly dissimilar to the opponent’s goods. The level of attention of the relevant is average and the inherent distinctiveness of the earlier marks is normal.

The signs coincide in two letters ‘BS’. However, their differing stylisation along with the additional elements and all the difference of the graphic depiction of the signs in comparison as analysed above create striking visual differences that will be clearly noticed by the relevant public. Besides, the additional verbal elements of the earlier marks contribute to significant aural differences between the signs. In addition, the marks have no concept in common that would lead the public to associate one with the other.

Hence, notwithstanding the identity found in respect of some of the goods in question, the Opposition Division finds that the differences between the signs prevail over their similarities and the contested sign does not bring to mind the earlier marks.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public which will perceived the two wavy lines within the letter ‘B’ of the two earlier marks as decorative features only. This is because, as a result of this perception, that part of the public will find the signs as being even less similar.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Tu Nhi VAN

Renata COTTRELL

Claudia MARTINI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.